Buck Rogers In The 21st Century

When lawyers sue their former clients for unpaid fees,  the result often is a return volley alleging legal malpractice.

The New York Appellate Division for the First Judicial Department dealt with such a situation in a decision issued yesterday.

The former client

The Dille Family Trust (the Trust), of which defendant is trustee, owned trademarks and copyrights for “Buck Rogers.” Two of the Dille family members are beneficiaries of the trust; their grandfather’s syndicate had obtained the Buck Rogers trademark and copyrights. The syndicate had hired Philip Nowlan to create comic strips based on the character, and his heirs started cancellation proceedings to terminate the syndicate’s trademark rights and obtain the rights for themselves. The beneficiaries of the Trust retained plaintiff law firm to handle intellectual property matters, including the cancellation action.

The trial court erred in part

Contrary to the motion court’s conclusion, there was a valid fee agreement between plaintiff and the Trust. The better practice would have been to send the engagement letter to the trustee, rather than only to the beneficiaries. However, the record, including email exchanges between the trustee and plaintiff, shows that the trustee was well aware of and approved of the beneficiaries’ authority to act on the Trust’s behalf with regard to plaintiff’s retainer and representation (see Granato v Granato, 75 AD3d 434 [1st Dept 2010]). It is irrelevant that the original engagement letter was not signed by the client (see 22 NYCRR 1215.1[a]).

While the court found a triable dispute over the bill, the legal malpractice counterclaim failed

Regarding the legal malpractice counterclaim, assuming that plaintiff’s conduct, in failing to complete a chain-of-title report or failing to resolve the underlying intellectual property disputes before withdrawing, amounts to negligence, the Trust failed to demonstrate causation. The Trust failed to show how it would have successfully opposed the underlying trademark cancellation proceeding, or would otherwise have protected its intellectual property rights, but for plaintiff’s omissions.

In addition, the resulting inability to efficiently market the trademarks is too speculative to constitute the “actual ascertainable damages” required to support the malpractice counterclaim.

Beneficiary Flint Dille’s bare allegation that he and plaintiff had agreed to a $25,000 fee cap is unsupported in the engagement letter sent to Dille listing an hourly rate or by anything else in the record, and therefore cannot establish a legal malpractice counterclaim. (citations omitted)

(Mike Frisch)